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In the Matter of Rollason's Registered Design.

The learned Counsel for the Appellants has contended that the Applicant cannot rest his case upon the circumstance that the centre part of the coffinplate was made by him depressed and the borders raised, for two reasons :— First, because he says that depression of the centre would be a matter of "shape " and "configuration" and not "pattern"; and next, because he says the 5 drawings do not indicate that the centre is to be depressed. My Lords, these words "applicable for the pattern, or for the shape or configuration, or for the ornament thereof," are to be found in the Act only in the Interpretation Clause. All that Section 47 and the following sections deal with is the question of "design," that is the word used and the only word; but the word "design" 10 is interpreted by the Interpretation Clause. In my opinion, the object of that Interpretation Clause was to make the word "design" as extensive as it reasonably ought to be. It was not intended to draw the distinction suggested as a sharp, hard and fast distinction between the design being "applicable for "the pattern," or "for the shape or configuration," or "for the ornament." I 15 do not think you can say that "pattern," as it is used in that section, necessarily and always excluded the shape or configuration, and that nothing could be included in "shape " or "configuration" which might not fall to be considered under "pattern"; or again, that the "ornament thereof" might not be part of the pattern and included under the word "pattern." The words have not a 20 sharply defined meaning, but the intention is to include any design, because the word is repeated-"any design" applicable to any class of goods and whether "applicable for a pattern" or "for the shape or configuration or "ornament," or some or all of them. The object was to use words which would include everything which would ordinarily fall within the word "design," and 25 to show that the word "design" was not intended to be used in any technical sense as excluding anything that would ordinarily fall within it.

My Lords, I should mention that in the Schedule to the Act, Schedule E, which contains the Form of Application, in which form Section 47, sub-section 2, prescribes that the application is to be made, there is nothing said about the 30 design being applicable for the one matter or the other. All that the Applicant is required to state is "the nature of his design.”

Then certain rules were made under the Statute, and in those rules a new form is given, or rather the old form of the Statute is accompanied by a note which interprets "the nature of the design" as including such matters as these, "such 35 "as whether applicable to pattern, shape, or configuration"; the word "ornament” is left out. Now, my Lords, I am not going here to say what is the meaning and effect of that rule or that requirement, or what is the effect of an application which states that it is applicable for the pattern, or what is the interpretation of "pattern." It is not necessary for the purposes of this case to do so; and I still 40 think, as I did in the case which I alluded to in the course of the argument, that it is not very easy to say what meaning and effect the rule was intended to have, or what its operation would be. This, certainly, I am very clear about, that it does not in terms purport to import a condition which will limit the effect of the design when registered, and that, there being no such condition 45 limiting the effect of the registration in the Statute, it could be added by the rules only if that were done in clear and unmistakable terms. Whether it would then have the operation contemplated I need not discuss, because certainly the rule does not purport to insert as a condition that the person registering the design is to be limited to some part of his design or to 50 some effect of his design. It is not necessary to say more on the present occasion.

My Lords, to my mind, the word "pattern as used here by the Applicant in relation to this subject-matter would include everything which would go to make up the design. Certainly, the word "pattern" very often includes, as I 55 have said, what you might ordinarily speak of as "ornament," or an element of it may be certain "shapes" and "configurations" in parts of the design. My

In the Matter of Rollason's Registered Design.

Lords, in the present case I do not find it necessary to say whether the drawings do indicate this depressed centre or not, because in my judgment this may be upheld, and ought to be upheld, as a new or original design, whether it was intended (probably it was) that there should be a depressed centre or whether 5 it was not so intended. No doubt the ornamentation or the pattern of the Applicant's plate bears a certain resemblance to the plate which has been called Sanders, which was previously known. There is a shell pattern in each corner of the plate in both cases, but the two designs are not to my mind the same. They may produce upon the eye a different effect, and the one may be thought to 10 be a more attractive design than the other. It is not possible to give reasons for the conclusion at which one arrives in a case of this sort--you cannot analyse the difference. You might find many differences, and yet come to the conclusion that the designs were the same; you might find but few differences, and yet come to the conclusion that the designs were different. In the present 15 case, looking at the two designs and comparing the one with the other without going into details, I think the Applicant's was a new and original design such as to entitle him to registration under the Act. Of course, in the present day it is very difficult to register any design that does not contain in it something that has been done before. Very often a very successful design may 20 be one in which the difference from previous designs can, on analysis, be shown to be very slight, where, nevertheless, the result is to make the one so much more pleasing than the other that it is a successful design. Whilst on the one hand we certainly ought not to give protection to a design in which the variations are trivial and unimportant so that it is substantially the same design 25 as one already registered, on the other hand we ought not to refuse it where the design is practically a different one which may be more attractive. I think in the present case, although I quite admit that it is a matter on which opinions may differ, different minds being differently affected in considering a case of this sort, nevertheless I have come to the conclusion that the Court of Appeal 30 were right in saying that this was a "new or original design." Certainly I am not prepared to differ from the conclusion at which they have arrived.

My Lords, so far that would defeat the Appellant's claim to have this design removed from the Register unless he is right in saying that, under the 51st Section of the Act, the copyright in the design has ceased, because before 35 delivery of the articles to which the registered design had been applied, the proprietor of the design had not caused the articles "to be marked with the "prescribed mark, or with the prescribed word or words or figures denoting "that the design is registered." In the present case, there being six figures, in some instances articles were sent out with one of the figures wrong—that is to 40 say, a 5 had been put upon the article in place of the figure 3. My Lords, the section by its concluding words leaves an opening to prevent the operation of the section in full stringency, because it provides that the copyright shall not cease if all proper steps have been taken by the proprietor to insure the marking of the article. In interpreting these concluding words I think it is 45 necessary to bear in mind the object of the section, and to take into account too what the nature of the omission was. The object of the section, as stated in plain terms, is to "denote that the design is registered"-that is to say, to give warning to the public that they are not entitled to copy it by reason of registration. Of course, if there is nothing to give that notice to the public, the 50 proprietor would need to make out a very strong case to excuse himself under the concluding words of the section, because he has failed to do that which was essential to the very purpose of the provision contained in the section, namely, to denote to the public that the design was a registered one. Even in that case he might escape the loss of his design by making out a case which would show 55 that it was not due to any fault of his; but it seems to me that the case to be made out would then need to be much stronger than if there were merely some error in complying with the exact requirements of the section, as to the figures

In the Matter of Rollason's Registered Design.

or words to be put upon the article if there be such compliance as plainly to indicate and denote that the design is a registered one. That is the class of case with which we are dealing here. The public would be equally warned of the registration of the design whether out of these six figures one was a 3 or a 5.

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My Lords, in the Scotch case which Mr. Renshaw cited, the result had been, by using a mould until it was worn out, to produce no marks at all upon the article to show that it was registered. I think it might well be said to the proprietor of a copyright, "It is your business to provide moulds "-you know that moulds wear out after a time-it was your business to see that under such 10 circumstances as these you did not continue to use a mould which had ceased to serve the purpose of indicating to the public that the article was made according to a registered design. But in the present case has the proprietor established that he took all proper steps to insure the marking of the article? He had given instructions to a competent manufacturer to make him the 15 necessary dies. It is not suggested that the instructions were not such as, if followed, would have made the dies with the proper numbers. They were so made in seven cases out of eight, but by a mistake of one of the workmen who made one of them a 5 was put in the place of a 3, a very common mistake, and one not unlikely to have occurred. But having employed a competent man to 20 make these dies, and then having used them for stamping the article which he sent out, has he not "taken all proper steps to insure the marking of the "article?" It seems to me that he has-and that this is just one of those cases which the concluding words of the section were intended to meet ; and it would be an extremely hard measure if, on account of a trivial mistake of that 25 description, the copyright in the design were to cease. On that point all the Judges are agreed-the learned Judge before whom the case came in the first instance, and those who heard it in the Court of Appeal.

My Lords, for these reasons I move your Lordships that the judgment appealed from be affirmed, and the appeal be dismissed, with costs.

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Lord MACNAGHTEN.-My Lords, I am of the same opinion on both points, and concur in the judgment proposed.

Lord MORRIS.-My Lords, I concur.

Lord SHAND.-My Lords, I concur also.

Innes v. Short and Beal.

IN THE HIGH COURT OF JUSTICE.-QUEEN'S BENCH DIVISION.

Before MR. JUSTICE BIGHAM.--June 27th, 1898.

INNES v. SHORT AND BEAL.

Action for infringement of patent.-Infringement denied.-Validity of. 5 patent denied.--Sale of article to be used in infringement of a patent.

A Patentee of an invention for using zinc powder to prevent corrosion in steam boilers appointed S. his agent. S. sold zinc powder, with printed directions for use headed "Innes' Patent Metallic Zinc." Subsequently the agency was determined, but S. continued to sell zinc powder with the same 10 directions, except that the words "Innes' Patent" were struck through in red ink, The Patentee brought an action against S. for infringement. S. denied infringement, and alleged that the patent had been anticipated and was invalid.

Held, that the patent had not been anticipated, and that S. had infringed, 15 and an injunction was granted to restrain S. from selling powdered zinc with a invitation to his purchasers to use it so as to infringe the patent. Townsend v. Hawarth distinguished.

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In 1895, a patent (No. 6454 of 1895) was granted to John Hepburn Innes (the Plaintiff in the action) for "An improved method of preventing corrosion 20 "and incrustation in steam boilers." The Complete Specification was as follows:-"I introduce metallic zinc into steam boilers or the like to prevent "corrosion, in a powdered state in order to obtain a much greater surface to the "action of the water, than if the zinc is in the solid or plate form. The zinc "powder either alone, amalgamated with alkali metals or mechanically mixed 25 with alkalies, alkaline earths or the like, prevents incrustation through the "anti-scale-forming properties which zinc salts possess; the salts of zinc are "formed by the solvent action of alkalies on the zinc powder inside the afore"said steam boilers or the like. Having now particularly described and "ascertained the nature of my said invention, and in what manner the same is 30" to be performed, I declare that what I claim is :-(1) The introduction of "metallic zinc in a powdered state either alone, amalgamated with alkali metals " or mechanically mixed with alkalies, alkaline earths or the like, into steam "boilers or the like."

It will be observed that no means of introducing the zinc powder are 35 mentioned in the Specification, nor is any particular part of the boiler indicated as the proper place for introducing it.

In May 1895, the Defendant Short became agent of the Plaintiff for the supply to steamship owners of zinc powder to be used in marine boilers, and was supplied by the Plaintiff with the powder. Short was also the Patentee of 40 a machine for the injection of zinc powder into boilers. In April 1897, Short terminated his agency. During the time when Short was acting as agent for the Plaintiff he had circulars printed, headed "Innes' Patent Metallic Zinc "Powder," which contained the following directions for use ;

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Innes v. Short and Beal.

"DIRECTIONS FOR USE.

"MARINE.

"QUANTITIES.-China, India, Australia, or any long voyage, 3 to 4 pounds per 100 nominal horse-power daily for the first five days; 2 to 2 pounds per "100 N.H.P. daily for the second five days; 1 to 2 pounds per 100 N.H.P. 5 "daily for the following days until five days from reaching final port, when no 66 powder is to be used.

"Atlantic or Black Sea trade, 3 to 4 pounds per 100 N.H.P. daily for the first "five days; 2 pounds per 100 N.H.P. daily afterwards until two days before "reaching final port, no powder to be used.

"Baltic trade, 3 pounds daily until the last day, when no powder is to be "used.

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"Home trade, 4 pounds daily, except the day of arrival.

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"Inject with the feed water direct into the feed pump by pet-cock or snifting "valve where practicable, or into the hot well, mixing the proper quantities in 15 a tin or bucket with fresh water before injecting. If Short's injector is used, "mix powder in about one quart of strong soda water before filling the"injector.

"When the boilers are open for cleaning purposes, any part showing the "least sign of pitting or corrosion to be well scraped and cleaned, afterwards 20 painted over with the zinc powder, mixed with fresh water to the consistency

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"of a thick paint, and allow to remain two to three hours before filling.

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"The engineer in charge will find out, from experience in the use of the

powder, the quantity that is most beneficial to his own particular boilers." Then followed directions for "Lancashire or land boilers," and for "water tube 25 "boilers."

He sent one of the circulars with each packet of zinc powder he supplied to his customers. Shortly, prior to determining the agency, Short ascertained that the zinc powder itself was not clained in the Specification; and he also came to the conclusion that the patent was invalid. He consequently struck 30 out the words "Innes' Patent" from the circulars, and after determining his agency he continued to supply his customers with ordinary zinc powder, which he obtained in the market, sending to each customer a copy of the circular, but with the words "Innes' Patent " struck through in red ink.

The Defendant Beal was merely an agent of the Defendant Short for deliver- 35 ing the zinc powder to Short's customers.

In August 1897, Innes commenced an action against Short and Beal, alleging infringement, and asking for an injunction restraining the Defendants from infringing the patent No. 6454 of 1895, and for other relief. The Plaintiff alleged in his Statement of Claim and Particulars of Breaches that the 40 Defendants had infringed by the sale to certain ship owners of zinc powder, and that the Defendants by sending out circulars with the words "Innes "Patent" struck through had represented that the Plaintiff's invention was not properly protected by patent, and that the Plaintiff was pretending that the goods sold were patented goods, whereas in fact they were, in consequence 45 whereof the Plaintiff had suffered in his business and reputation. The claim in respect of this alleged libel was withdrawn by the Plaintiff after hearing the Defendants' explanations.

The Defence denied infringement. The validity of the patent was also denied on the grounds of anticipation by four prior Specifications, one of which 50 (Weir's, No. 4379 of 1880) described the introduction of zinc into steam boilers for the purpose of obtaining hydrogen to act as an anti-corrosive, and the other (Blenkinsop's, No. 15,231 of 1885) described a method of preventing corrosion of ship plates by a paint containing zinc in a finely divided state,